Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

1 March 2023 (*)

(EU trade mark – Invalidity proceedings – EU figurative mark Gourmet – Earlier national word mark GOURMET – Relative ground for invalidity – Distinctive character of earlier mark – Genuine use of the earlier mark – Form differing in elements which alter the distinctive character)

In Case T‑102/22,

Transgourmet Ibérica, SAU, established in Gerona (Spain), represented by C. Duch Fonoll and I. Osinaga Lozano, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Nicolás Gómez and D. Gája, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Aldi GmbH & Co. KG, established in Mülheim an der Ruhr (Germany),

THE GENERAL COURT (Eighth Chamber),

composed of A. Kornezov, President, G. De Baere and K. Kecsmár (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the written part of the procedure,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

1        By its action under Article 263 TFEU, the applicant, Transgourmet Ibérica, SAU, seeks annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 December 2021 (Case R 862/2021-2) (‘the contested decision’).

I.      Background to the dispute

2        On 12 March 2018, the predecessor company of the applicant lodged with EUIPO an application for a declaration of invalidity of the EU trade mark registered under No 8 143 653, following an application filed on 9 March 2009 for the following figurative sign:

3        The goods covered by the contested mark and in respect of which a declaration of invalidity was sought were in Class 30 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded to the following description: ‘Tea, cocoa, sugar, rice, tapioca, sago; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice’.

4        The declaration of invalidity was based on the applicant’s earlier Spanish mark No 1085598 for the word mark GOURMET filed on 15 November 1984 and registered on 16 March 1987, for goods in Class 30 corresponding to the following description: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago; coffee substitutes, flour and cereal preparations, bread, biscuits, pies, pastries, confectionery, edible ices; honey, treacle; yeast, baking-powder; salt, vinegar, sauces and ice, with the express exclusion of spices and condiments of all kinds’.

5        The grounds relied on in support of the application for a declaration of invalidity were those referred to in Article 60(1)(a), read in conjunction with Article 8(1)(b) and (5), of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

6        On 16 March 2021, the Cancellation Division rejected the application for a declaration of invalidity. It found, in essence, that the evidence produced by the applicant did not demonstrate use of the earlier mark as registered.

7        On 14 May 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

8        By the contested decision, the Board of Appeal dismissed the appeal, concluding that the applicant had not demonstrated genuine use of the sign as registered for the period from 9 March 2004 to 8 March 2009. It found, first, that the evidence did not show use as a trade mark and, secondly, that certain evidence demonstrated use of the mark in a form which altered its distinctive character.

II.    Forms of order sought

9        The applicant claims that the Court should:

–        annul the contested decision;

–        refer the case back to the Board of Appeal;

–        order EUIPO and the other party to the proceedings before the Board of Appeal to pay the costs.

10      EUIPO contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

III. Law

11      In support of its action, the applicant relies, in essence, on three pleas in law alleging, first, infringement of Article 3 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1); secondly, infringement of Article 64(2) and (3) of Regulation 2017/1001, read in conjunction with Article 10(4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1); and, thirdly, infringement of Article 64(2) and (3) of Regulation 2017/1001, read in conjunction with Article 18(1)(a) thereof.

12      Before examining the pleas in law put forward by the applicant, the Court considers it necessary to make the following observations regarding the rules applicable in the present case.

 The temporal application of EU legislation

13      Directive 2015/2436, relied on by the applicant in support of its first plea, entered into force on 12 January 2016 and repealed, with effect from 15 January 2019, Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), which entered into force on 28 November 2008 in accordance with Article 18 of that directive. Therefore, in view of the date on which the application for registration of the contested mark was filed, namely 9 March 2009, the references to the provisions of Directive 2015/2436 must be understood as being made to the provisions of Directive 2008/95, in force on that date (see, by analogy, judgment of 29 January 2020, Sky and Others, C‑371/18, EU:C:2020:45, paragraphs 48 and 49 and the case-law cited).

14      Furthermore, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001, supplemented by the provisions of Delegated Regulation 2018/625.

15      Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union trade mark] (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009 in accordance with Article 167 of that regulation. The latter regulation, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), was also repealed and replaced, with effect from 1 October 2017, by Regulation 2017/1001 in accordance with Articles 211 and 212 of that regulation.

16      Given the date on which the application for registration of the contested mark was filed, namely 9 March 2009, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).

17      Consequently, in the present case, as regards the substantive rules, the references to Regulation 2017/1001 made by the Board of Appeal in the contested decision, and by the parties in their respective pleadings, must be understood as referring to the provisions of Regulation No 40/94.

18      In that regard, the Board of Appeal was required, in the present case, to determine the periods in respect of which proof of genuine use of the earlier mark had to be furnished under Article 56(2), read in conjunction with Article 43(2), of Regulation No 40/94.

19      As regards the first relevant period, those provisions provide that ‘If the applicant so requests, the proprietor of an earlier Community trade mark … shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application [at issue], the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered … provided the earlier Community trade mark has at that date been registered for not less than five years’.

20      An application in accordance with Article 56(2), read in conjunction with Article 43(2), of Regulation No 40/94, should have led the Board of Appeal to calculate the first relevant period, taking into account the date of publication of the contested EU trade mark application, namely 10 August 2009. Thus, the first relevant period should have been from 10 August 2004 up to and including 9 August 2009, and not from 9 March 2004 up to and including 8 March 2009, as found by the Board of Appeal in the contested decision.

 The first plea in law, alleging infringement of Article 3(1)(b) of Directive 2008/95

21      In its first plea, the applicant in essence criticises the Board of Appeal for having assessed the distinctive character of the earlier mark prior to the assessment of the evidence of genuine use submitted by the applicant. In its submission, the statement in the contested decision to the effect that the earlier mark has weak distinctive character should necessarily have led to the conclusion that the earlier mark also serves as an indication of commercial origin. The appellant relies, inter alia, on paragraph 57 of the judgment of 26 February 2015, 9Flats v OHIM – Tibesoca (9flats.com) (T‑713/13, not published, EU:T:2015:114), in that it acknowledges that the fact that a national mark has been registered means that that mark has a minimum degree of inherent distinctive character, since Article 3(1)(b) of Directive 2008/95 precludes registration of a mark which is devoid of distinctive character. In addition, the applicant submits that, in the judgment of 15 December 2016, Aldi v EUIPO – Miquel Alimentació Grup (Gourmet) (T‑212/15, not published, EU:T:2016:746), the Court expressly confirmed the distinctive character of the earlier mark.

22      EUIPO contests the applicant’s arguments. In its view, the findings made by the Board of Appeal are based not on the total lack of distinctive character of the earlier mark, but rather on its low degree of distinctive character. Consequently, the validity of the applicant’s earlier Spanish mark was not called into question – either expressly or implicitly – in the contested decision. Furthermore, it observes that the fact that the earlier mark must be regarded as having at least a minimum degree of distinctive character does not automatically lead to the conclusion that any reference to the word ‘gourmet’ in the evidence constitutes use in accordance with the function of a trade mark.

23      As a preliminary point, it should be noted that, according to the case-law, the fact that a national mark has been registered means that it has a minimum degree of inherent distinctive character, since Article 3(1)(b) of Directive 2008/95 precludes registration of a mark which is devoid of distinctive character. The validity of an international or national trade mark may not be called into question in proceedings for registration of an EU trade mark, but only in cancellation proceedings brought in the Member State concerned. That case-law is based on the idea that the EU legislature has established a system based on the coexistence of EU trade marks with national trade marks (see judgment of 15 December 2016, Gourmet, T‑212/15, not published, EU:T:2016:746, paragraph 36 and the case-law cited).

24      It follows from the coexistence of EU trade marks and national trade marks, and from the fact that the registration of the latter does not fall within the sphere of competence of EUIPO, and that judicial review in respect of them does not fall within the jurisdiction of the General Court, that in proceedings opposing the registration of an EU trade mark, the validity of national trade marks may not be called into question (see judgment of 15 December 2016, Gourmet, T‑212/15, not published, EU:T:2016:746, paragraph 37 and the case-law cited).

25      It follows that, in order to avoid infringing Article 8(1)(b) of Regulation No 40/94, it is necessary to acknowledge a certain degree of distinctiveness of an earlier national mark on which an opposition against the registration of an EU trade mark is based (see, to that effect, judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 47).

26      Moreover, the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character (see, to that effect, judgment of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 41).

27      In the present case, it is apparent from the contested decision that the Board of Appeal, first, found, on several occasions, in particular in paragraphs 36 and 39 of the contested decision, that the term ‘gourmet’ was a word ‘descriptive’ of the goods at issue or that it had a ‘descriptive meaning’. Secondly, the Board of Appeal stated in paragraph 46 of the contested decision that the findings of the Cancellation Division were not based on the complete lack of distinctive character and that the validity of that mark had not been called into question, whilst reiterating the descriptive character of the word ‘gourmet’.

28      In that regard, it is true that the Board of Appeal, in particular in paragraphs 36 and 39 of the contested decision, merely classifies the term ‘gourmet’ as descriptive and not the earlier Spanish mark as a whole. The fact remains, however, that that term ‘gourmet’ is the single term of the earlier word mark. Therefore, although the Board of Appeal appears to acknowledge the distinctive character of the earlier national mark, it nevertheless found that the single term composing it was descriptive, which constitutes an error of law in the light of the case-law cited in paragraph 26 above, as the characterisation of a sign as descriptive amounts to denying its distinctive character.

29      Accordingly, it follows from the foregoing that the first plea in law must be upheld.

 The second plea in law, alleging infringement of Article 56(2) and (3) of Regulation No 40/94, read in conjunction with Article 10(4) of Delegated Regulation 2018/625

30      By the second plea, the applicant submits, in essence, that the Board of Appeal refused to recognise the probative value of several items of evidence relating to genuine use of the earlier mark, namely the invoices, leaflets and press articles produced before it which show the earlier mark as registered.

31      As a preliminary point, it should be borne in mind that it is apparent from recital 9 of Regulation No 40/94 that the EU legislature considered that there was no justification for protecting the earlier trade mark, except where that mark had actually been used.

32      Under Article 10(4) of Delegated Regulation 2018/625, evidence of genuine use is, in principle, to be limited to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing sworn or affirmed as referred to in Article 97(1)(f) of Regulation 2017/1001.

33      The rationale for the requirement that a mark must be the subject of genuine use in order to be protected under EU law is that EUIPO’s register cannot be compared to a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period. On the contrary, that register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life (see judgment of 15 July 2015, Deutsche Rockwool Mineralwoll v OHIM – Recticel (λ), T‑215/13, not published, EU:T:2015:518, paragraph 20 and the case-law cited).

34      As is apparent from the case-law, there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).

35      It should also be borne in mind that when assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the products or services protected by the mark, the nature of those products or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40 and the case-law cited).

36      Lastly, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see judgment of 2 February 2016, Benelli Q.J. v OHIM – Demharter (MOTOBI B PESARO), T‑171/13, EU:T:2016:54, paragraph 75 and the case-law cited).

37      It is in the light of those considerations that it is necessary to examine whether the Board of Appeal made an error of assessment in finding that the evidence produced by the applicant did not demonstrate use of the earlier mark GOURMET as registered.

38      In the present case, in order to determine the nature of the use of the earlier mark, the Cancellation Division and the Board of Appeal had to examine two distinct types of evidence submitted by the applicant, namely, first, the evidence on which the earlier mark appears as registered and, secondly, the evidence on which the earlier mark appears in a different form from that in which it was registered.

39      It should be noted that, as stated in paragraph 6 of the contested decision and as is apparent from the analysis of the documents contained in EUIPO’s file submitted to the Court, in order to establish genuine use of the earlier mark, the applicant produced, inter alia, during the proceedings before EUIPO, the following evidence on which the earlier mark appears as registered:

–        press articles in Spanish mentioning the trade mark GOURMET dating from 2005 to 2018;

–        screenshots of websites showing the trade mark GOURMET in both its registered form and its figurative form;

–        a number of invoices relating to the periods from 2004 to 2009 and from 2013 to 2017, in Catalan or Spanish, referring, inter alia, to goods with descriptions which include the term ‘gourmet’;

–        a number of certificates issued by third companies, organisations and professionals from 30 June 2009.

40      The applicant also provided catalogues and leaflets showing Gourmet products, dating from 2004, 2007, 2008 and from the period 2014-2018, on which the earlier mark appears both in a different form from that in which it was registered and in the form as registered.

 First complaint of the second plea in law, alleging that the Board of Appeal erred in its assessment of the evidence of use showing the earlier mark as registered

41      By the first complaint of the second plea, the applicant claims, in essence, that the Board of Appeal applied incorrect criteria when examining the evidence which demonstrated use of the mark as registered. According to the applicant, the Board of Appeal wrongly followed the analysis of proof of use which applies where the mark has been used in a different form from that in which it was registered. The applicant submits that the distinctive character of the earlier mark and the perception of the word ‘gourmet’ by the relevant public as a descriptive term should not have been taken into consideration when examining the evidence seeking to show use of the earlier mark as registered.

42      EUIPO contests the applicant’s arguments. According to it, when the Board of Appeal found, in paragraph 39 of the contested decision, that it did not consider that the mere mention of the word ‘gourmet’ could be capable of proving that the earlier mark had been used in accordance with the manner in which it was registered, it refers to the fact that the sign GOURMET was registered as an individual trade mark but was not used as such. It was only in relation to the evidence showing use of the mark applied for in the form of figurative signs that the Board of Appeal did conclude that use of the earlier mark as registered had not been proven. In so doing, according to EUIPO, the Board of Appeal correctly drew a distinction between, on the one hand, use of the earlier mark and, on the other hand, use of the term ‘gourmet’ perceived by the public as a descriptive or laudatory reference to the superior quality of the goods.

43      As regards the evidence on which the earlier mark appears as registered, the Board of Appeal found, in paragraph 36 of the contested decision, that the weak distinctive character of the earlier mark GOURMET played not only a role in establishing whether or not the manner in which the sign had actually been used on the goods altered the distinctive character of the sign as registered, but also affected the examination of the various types of evidence submitted. It added that, in view of its descriptive and very weak distinctive character, the word ‘gourmet’, as presented in the documents produced by the cancellation applicant, was not necessarily used as a mark identifying the commercial origin of the applicant’s goods, but was instead used as a descriptive term.

44      The Board of Appeal was wrong to examine whether the word mark GOURMET was descriptive or whether it would be perceived by the relevant public as a descriptive term in the evidence showing use of the earlier mark in its registered form. First, it cannot be disputed that the earlier mark is distinctive, as was concluded in paragraph 28 above, and therefore serves as an indication of the origin of the goods concerned. Secondly, Article 56 of Regulation No 40/94 and the case-law relating to genuine use cited in paragraph 34 above do not expressly require an examination of the distinctive character of the earlier mark.

45      The first complaint of the second plea in law must therefore be upheld.

 The second complaint of the second plea in law, relating to the nature of use of the evidence showing the earlier mark as registered

46      By the second complaint of the second plea, the applicant claims that the incorrect assessment of the evidence led the Board of Appeal to conclude, wrongly, that the word ‘gourmet’ was used for descriptive purposes and not as a trade mark. Furthermore, according to the applicant, it is apparent from settled case-law (judgments of 8 July 2010, Engelhorn v OHIM – The Outdoor Group (peerstorm), T‑30/09, EU:T:2010:298, paragraphs 41 and 44, and of 4 October 2016, Lidl Stiftung v EUIPO – Horno del Espinar (Castello), T‑549/14, not published, EU:T:2016:594, paragraph 49) that use of the mark as registered, for example on invoices or catalogues, and accompanying the description of the goods sold attests to the use of that element as a trade mark. The applicant concludes from that that, in the present case, the use of the earlier mark on the evidence submitted by the applicant, alongside the description of the goods concerned, for example on the invoices, does indeed establish a link between the sign and the goods and makes it possible to establish genuine use as a mark to designate, on the market, the goods in Class 30.

47      EUIPO contests the applicant’s arguments. It argues that while invoices, catalogues and the like are as such suitable evidence, they can only be sufficient on their own to establish genuine use of a mark, provided that they do not only show use of the mark as registered in relation to the registered goods and contain sufficient indications as to time, place and extent of use, but also show use of the sign as a trade mark. EUIPO adds that, in the light of the evidence provided, the Board of Appeal reached the conclusion that the use of the word ‘gourmet’ in press articles, on the website and on invoices, declarations and leaflets did not enable it to conclude with certainty that that use would be identified by the relevant consumers as an indication of commercial origin, but that those consumers could perceive that word as a purely descriptive term and look for the actual mark elsewhere.

48      According to the case-law cited in paragraph 34 above, genuine use of a trade mark can only be found where that mark is used to guarantee the identity of origin of the goods or services for which it was registered.

49      In the present case, after analysing the documents referred to in paragraph 39 above, the Board of Appeal found, in essence, in paragraphs 36 to 39 of the contested decision, that the way in which the earlier mark had been used in the evidence submitted by the applicant presenting the mark as registered did not make it possible to conclude with certainty that that use would be identified by the relevant consumers as an indication of commercial origin, in that consumers could perceive that word as a term purely descriptive of the goods covered and look for the actual mark elsewhere.

50      However, the Board of Appeal erred in finding that the examination of the evidence referred to in paragraph 39 above did not support the conclusion that the mark had been used in accordance with its essential function as an indication of origin. It is apparent from certain items of evidence that the term ‘gourmet’ is used to refer to the earlier mark and not to describe goods or a line of products, as the Board of Appeal seems to suggest.

51      That is the case, in the first place, for most of the press articles, consolidated in EUIPO’s file (Document 18), which refer to the mark GOURMET as the applicant’s ‘distributor mark’. One of the articles, dated 10 June 2007, states that ‘the group also sells 759 own brand products: Gourmet (food), Mical (domestic cleaning) and Micaderm (personal hygiene)’. In addition, two articles dated 10 October 2005 and 24 June 2007 refer to ‘three [trade marks]: GOURMET (food products and beverages), Micaderm (personal hygiene products) and Mical (household cleaning and decoration goods and accessories)’ of the Miquel Alimentacio group.

52      In the second place, several written statements provided by the applicant before EUIPO refer to the mark GOURMET as a trade mark. That is true of the statements of 21 August 2009 of the managing director of Rocabruna, who provides sales figures ‘in relation [to] the trade mark Gourmet’ (Document 15 A); the statement of 30 July 2009 of Phineas Taylor Barnum, which certifies that the applicant incurred costs under three contracts for Gourmet advertising campaigns (Document 16); and NEORG’s statement of 31 July 2009 attesting that that company worked for the ‘promotion of the [trade mark] Gourmet’ during the six advertising campaigns of 2008 (Document 17).

53      In the third place, even though they do not refer to the ‘GOURMET mark’, the invoices provided by the applicant (Document 14) show the goods immediately followed by the term ‘gourmet’. Thus, when those invoices are compared with the other evidence referred to in paragraphs 39 and 40 above, on which the word element ‘gourmet’ is clearly identifiable as a trade mark, it appears that those invoices refer to the goods covered by a mark. Contrary to EUIPO’s submission that the word ‘gourmet’, without being highlighted, is used in the usual position of an adjective, in the same font and in the same capital letters as all the other descriptive elements of the goods, it is not unusual for the description of the goods and the name of the mark to appear side by side in invoices comprising various goods of different marks, as is the case here.

54      Accordingly, several items of evidence appear to be sound and reliable evidence and come from various sources.

55      In the present case, the Board of Appeal did not carry out any specific examination of that evidence. It confined itself, in paragraph 39 of the contested decision, to expressing doubts without examining the evidence which the applicant had submitted to it, assuming, therefore, and wrongly, that since those elements referred to the term ‘gourmet’, which it had regarded as descriptive of the goods, they did not demonstrate a use of the mark which could indicate the commercial origin of the goods.

56      As regards the judgment of 31 January 2019, Pandalis v EUIPO (C‑194/17 P, EU:C:2019:80, paragraphs 91 and 92), relied on by EUIPO to justify the Board of Appeal’s classification of the descriptive character of the term ‘gourmet’, although it is true that the Court of Justice held that an element of a mark could be used as a descriptive element of the goods at issue – and not in accordance with the function of an indication of origin – that is not the case here with regard to the evidence which was incorrectly examined by the Board of Appeal, as established in paragraph 55 above.

57      In the light of all the foregoing considerations, the Board of Appeal erred in law. The second complaint of the second plea in law must therefore be upheld.

 The third complaint of the second plea in law, alleging that the Board of Appeal called into question the probative value of certain documents

58      In the context of the third complaint of the second plea, the applicant claims, in essence, that, contrary to Article 10(4) of Delegated Regulation 2018/625 and settled case-law (see judgment of 28 May 2020, Diesel v EUIPO – Sprinter megacentros del deporte (Representation of a curved and angled line), T‑615/18, not published, EU:T:2020:223, paragraph 82 and the case-law cited), the Board of Appeal had called into question the probative value of types of evidence suitable to prove genuine use and wrongly held that only the evidence showing the word ‘gourmet’ affixed to the products or their packaging was capable of proving genuine use of the earlier mark.

59      EUIPO contests the applicant’s arguments. It submits that the Board of Appeal neither called into question the probative value, inter alia, of the invoices, leaflets or press articles, nor did it require the mark to be affixed to the goods. EUIPO recalls the Board of Appeal’s statement that the result might have been different if the word ‘gourmet’ had been used in a different context, for example on goods and packaging, which follows logically from the fact that the assessment of the use of the mark in accordance with its essential function depends on the manner in which the mark is used on the market and may, in that context, be perceived by the relevant public.

60      In the present case, in paragraph 39 of the contested decision, after having referred to the evidence submitted by the applicant, as set out in paragraph 39 above, the Board of Appeal found that the word ‘gourmet’ could be understood as a laudatory or descriptive term or as a mere reference to a more basic and cheaper line of products, and concluded that the applicant had not demonstrated, by the mere reference to the word ‘gourmet’ on those documents, use of the mark in the form in which it had been registered. The Board of Appeal added that, ‘in all likelihood’, that conclusion would have been different if the applicant had furnished evidence that the word ‘gourmet’ had been used as such and without the addition of further graphic elements on the goods and/or their packaging.

61      In so doing, the Board of Appeal seems to attach, wrongly and without explanation, greater importance, or even greater probative value to the evidence concerning the goods and their packaging, to the detriment of the other evidence produced by the applicant.

62      As noted in paragraph 32 above, account may be taken, for example, of packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing. Accordingly, that provision does not provide for any hierarchy between those items of evidence.

63      It follows that those items of evidence could not be disregarded by the Board of Appeal on the ground that they consisted of invoices, press cuttings or statements in writing and not the packaging of the goods at issue.

64      Furthermore, it must be borne in mind that, in order to examine whether a contested trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42 and the case-law cited). In the present case, as has been stated in paragraph 55 above, the Board of Appeal did not carry out any specific examination of the evidence and was therefore unable to carry out an overall analysis of that evidence.

65      Consequently, the third complaint of the second plea and, therefore, the second plea in its entirety, must be upheld.

 The third plea in law, alleging infringement of Article 56(2) and (3), read in conjunction with Article 15(2), of Regulation No 40/94

66      By the third plea, which is divided into two parts, the applicant claims, in essence, that the Board of Appeal erred in its assessment of genuine use of the figurative signs which appeared in the evidence produced – in particular the two signs represented below – and which, according to the applicant, could constitute use of the earlier mark as registered for the purposes of Article 15(2) of Regulation No 40/94:

67      First, the applicant complains that the Board of Appeal followed the wrong criteria and erred in finding that the assessment of whether or not a sign had been used as registered required a stricter examination than that carried out in the context of the definition of the distinctive and dominant elements when assessing the likelihood of confusion.

68      Secondly, according to the applicant, that assessment substantiated the incorrect conclusion that the additions to the earlier mark, which are not particularly striking or distinctive, altered its distinctive character.

69      As a preliminary point, it must be recalled that it follows from point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 that, as regards the obligation to use an EU trade mark within a period of five years following its registration, it is also necessary to allow ‘use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor’.

70      For a trade mark to possess distinctive character for the purposes of Regulation 2017/1001, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (see judgments of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 22 and the case-law cited, and of 13 September 2016, hyphen v EUIPO – Skylotec (Representation of a polygon), T‑146/15, EU:T:2016:469, paragraph 26 and the case-law cited).

71      It must be observed that point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 relates to a situation, in which, inter alia, a national or EU registered trade mark is used in trade in a form slightly different from the form in which registration was effected. Its purpose, which avoids imposing strict conformity between the used form of the trade mark and the form in which the mark was registered, is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (see judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 27 and the case-law cited).

72      In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see, to that effect, judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 27 and the case-law cited).

73      In order to establish that the distinctive character of the registered trade mark has been altered it is necessary to perform an examination of the distinctive and dominant character of the elements which have been added, based on the intrinsic qualities of each of these elements as well as the relative position of the various elements in the configuration of the trade mark (see judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 28 and the case-law cited).

74      For the purposes of that finding, account must be taken of the intrinsic qualities and, in particular, the greater or lesser degree of distinctive character of the earlier mark used solely as part of a complex trade mark or jointly with another mark. The weaker the distinctive character, the easier it will be to alter it by adding a component that is itself distinctive, and the more the mark will lose its ability to be perceived as an indication of the origin of the good it identifies. The reverse is also true (judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 29).

75      In the present case, it should be noted that the earlier mark is a word mark. In accordance with the case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. Consequently, the protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (see judgment of 16 September 2013, Müller Boré & Partner v OHIM – Popp and Others (MBP), T‑338/09, not published, EU:T:2013:447, paragraph 54 and the case-law cited). In addition, it is settled case-law that the specific presentation of such a mark is irrelevant. The specific representation of a word mark is not generally of such a nature as to alter the distinctive character of that mark as registered (see judgment of 23 September 2015, L’Oréal v OHIM – Cosmética Cabinas (AINHOA), T‑426/13, not published, EU:T:2015:669, paragraph 28 and the case-law cited).

76      It is in the light of those considerations that it must be examined whether the Board of Appeal was right to find that it had not been proved that the earlier mark was used in a form constituting an allowable difference. It is appropriate to start by examining the second part of the third plea in law.

 The second part of the third plea in law, alleging an error in the assessment of the influence on the distinctive character of the earlier mark

77      By its second part, the applicant submits that the Board of Appeal erred in the assessment of the influence of the added elements on the distinctive character of the earlier mark in finding that those elements altered its distinctive character.

78      In support of that part of its plea, the applicant refers to the judgment of 15 December 2016, Gourmet (T‑212/15, not published, EU:T:2016:746), already mentioned in paragraph 21 above, which acknowledged that a figurative mark Gourmet enjoyed – even minimum – distinctive character, then recalls that the case-law has established that the additions to the registered mark do not alter the distinctive character of the mark in the form in which it was registered, inter alia because of their dominant position in the sign or their weak distinctive character. Therefore, the applicant, considering that the figurative element resembling a chef’s hat is an element commonly used in trade to identify food products, concludes that the dominant element of the figurative sign as used is the word ‘gourmet’.

79      EUIPO contests the applicant’s arguments. It submits that the Board of Appeal was right to find that the very weak distinctive character of the earlier mark resulting from the word ‘gourmet’ is already altered by slight variations, such as the addition of weakly distinctive elements only, and that it drew the corresponding conclusions in the assessment under Article 18(1)(a) of Regulation 2017/1001.

80      First of all, it must be borne in mind, as has been established in paragraph 40 above, that, as regards the catalogues and leaflets, the word ‘gourmet’ appears systematically in a figurative form, accompanied by the mark as registered, under the photo of the goods. It must be held that the figurative form of the word ‘gourmet’ used in the evidence submitted in the present case does not alter the distinctive character of the earlier word mark GOURMET as registered.

81      In that regard, it must be borne in mind that, when a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of the mark (see judgment of 13 October 2021, Schneider v EUIPO – Frutaria Comercial de Frutas y Hortalizas (Frutaria), T‑12/20, not published, EU:T:2021:702, paragraph 68 and the case-law cited).

82      In the present case, and as pointed out by the Board of Appeal in paragraph 41 of the contested decision, the word element ‘gourmet’ has a weak distinctive character with regard to goods in Class 30. The distinctive character of the figurative elements added to the word element, when the mark is affixed to the goods at issue, is also weak.

83      The white hat, added above the word mark, is neither striking nor dominant because of its small size. Moreover, the presence of that figurative element in the signs used by the applicant does not have the effect of changing the order of reading, semantic content and phonetic aspect of the term ‘gourmet’, which remains clearly identifiable (see, to that effect, judgment of 3 October 2019, 6Minutes Media v EUIPO – ad pepper media International (ADPepper), T‑668/18, not published, EU:T:2019:719, paragraphs 47 to 50).

84      Furthermore, a chef’s hat is a banal and commonplace element in the field of food products, in so far as it indicates that the goods are made by a chef. In that regard, the Board of Appeal’s reasoning that certain relevant goods are raw foodstuffs and not products cooked by a chef, which increases the distinctive character of the white chef’s hat, cannot be accepted. Raw foodstuffs can be used by a chef in his or her preparations.

85      The red frame added to the background must be regarded as a simple common decorative element, which is not particularly striking and which does not alter the function of indicating the commercial origin of the foodstuffs at issue. Moreover, in the judgment relied on by the applicant in paragraph 78 above, between the same parties, the General Court had already recognised that the shape and colour of the background of the word element ‘gourmet’ were purely decorative and ancillary elements with regard to that word element (judgment of 15 December 2016, Gourmet, T‑212/15, not published, EU:T:2016:746, paragraph 57).

86      In the same case, the Court pointed out that the weak distinctive character of an element of a composite mark does not necessarily imply that that element cannot constitute a dominant element, since it may, on account, in particular, of its position in the sign or its size, make an impression on consumers and be remembered by them (see judgment of 15 December 2016, Gourmet, T‑212/15, not published, EU:T:2016:746, paragraphs 60 and 61 and the case-law cited).

87      In the present case, the mark, as it appears on the goods, consists of a red frame, on which the word element ‘gourmet’ is represented and, above it, a figurative element representing a small chef’s hat. The word element is located in the centre of the mark and occupies the greater part of its space; it dominates the whole image. The attention of the public will therefore be held by the word element, the position of which is predominant, and not by its typography, by the figurative element representing a chef’s hat or by the shape or colour of the background. It follows that the word element ‘gourmet’ can only be considered to be the dominant element of the mark GOURMET as represented on the goods at issue, even if it is weakly distinctive.

88      In those circumstances, the additional figurative elements are not capable of altering the distinctive character of the earlier word mark GOURMET as registered.

89      It follows that the Board of Appeal infringed Article 56(2) and (3) of Regulation No 40/94, read in conjunction with Article 15(2) thereof.

90      It follows from the foregoing that the second part of the third plea in law, alleging an error in the assessment of the genuine use of variations of the earlier word mark must be upheld, and consequently, without it being necessary to examine the first part of the third plea in law, to uphold the forms of order sought by the applicant by annulling the contested decision.

IV.    Costs

91      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

92      Since EUIPO has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant.

93      In addition, the applicant has applied for EUIPO to be ordered to pay the costs which it incurred before the Board of Appeal. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure of the General Court, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. Consequently, EUIPO must also be ordered to pay the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby:

1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 December 2021 (Case R 862/2021-2);

2.      Dismisses the action as to the remainder;

3.      Orders EUIPO to bear its own costs and to pay all the costs incurred by Transgourmet Ibérica, SAU.

Delivered in open court in Luxembourg on 1 March 2023.

*      Language of the case: English.

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